[Code of Federal Regulations]

[Title 48, Volume 1]

[Revised as of October 1, 2005]

From the U.S. Government Printing Office via GPO Access

[CITE: 48CFR27.208]



[Page 514]

 

            TITLE 48--FEDERAL ACQUISITION REGULATIONS SYSTEM

 

                CHAPTER 1--FEDERAL ACQUISITION REGULATION

 

PART 27_PATENTS, DATA, AND COPYRIGHTS--Table of Contents

 

                          Subpart 27.2_Patents

 

Sec. 27.208  Use of patented technology under the North American Free Trade Agreement.



    (a) The requirements of this section apply to the use of technology 

covered by a valid patent when the patent holder is from a country that 

is a party to the North American Free Trade Agreement (NAFTA).

    (b) Article 1709(10) of NAFTA generally requires a user of 

technology covered by a valid patent to make a reasonable effort to 

obtain authorization prior to use of the patented technology. However, 

NAFTA provides that this requirement for authorization may be waived in 

situations of national emergency or other circumstances of extreme 

urgency, or public noncommercial use.

    (c) Section 6 of Executive Order 12889 of December 27, 1993, waives 

the requirement to obtain advance authorization for--

    (1) An invention used or manufactured by or for the Federal 

Government, except that the patent owner must be notified whenever the 

agency or its contractor, without making a patent search, knows or has 

demonstrable reasonable grounds to know that an invention described in 

and covered by a valid U.S. patent is or will be used or manufactured 

without a license; and

    (2) The existence of a national emergency or other circumstances of 

extreme urgency, except that the patent owner must be notified as soon 

as it is reasonably practicable to do so.

    (d) Section 6(c) of Executive Order 12889 provides that the notice 

to the patent owner does not constitute an admission of infringement of 

a valid privately owned patent.

    (e) When addressing issues regarding compensation for the use of 

patented technology, Government personnel should be advised that NAFTA 

uses the term ``adequate remuneration.'' Executive Order 12889 equates 

``remuneration'' to ``reasonable and entire compensation'' as used in 28 

U.S.C. 1498, the statute which gives jurisdiction to the U.S. Court of 

Federal Claims to hear patent and copyright cases involving infringement 

by the U.S. Government.

    (f) Depending on agency procedures, either the technical/requiring 

activity or the contracting officer shall ensure compliance with the 

notice requirements of NAFTA Article 1709(10). A contract award should 

not be suspended pending notification to the right holder.

    (g) When questions arise regarding the notice requirements or other 

matters relating to this section, the contracting officer should consult 

with legal counsel.



[61 FR 31648, June 20, 1996]